Malaysia – Trade Mark Expedited Examination

In line with its policy of beefing up its Intellectual Property regime and encouraging entrepreneurs to register their IP rights, Malaysia has introduced expedited examination of trademark applications with effect from 15 February 2011. While a lot of ink has been spilt on highlighting the importance of registering one’s trade mark, it would be imperative to highlight that it now takes a much shorter timeframe to apply for and obtain protection for your valued trade mark.

To briefly summarize, under the normal course of events, a trademark application would typically go through the following life cycle: The application is filed, a search and examination report is established in about 6 months and a Notification of Acceptance is issued (if the statutory requirements are deemed to have been fulfilled). Upon payment of requisite fee, the application is published and intended opponents have two months to file their Notice of Opposition. If no Opposition is filed, the Registrar then proceeds to approve the registration. The entire process, subject to inherent procedural complexities, is expected to last around 15 months.

However, expedited examination reduces this timeframe. In order to avail of this facility, applicants would need to make a specific request within 4 months from the date of the Application. If the Registrar is satisfied that, inter alia: the request sought is for national or public interest; that there are infringement proceedings pending; that the application for TM registration is a pre-requisite for availing of monetary benefits or schemes run by the Government or by an institution recognized by the Registrar; and that there are reasonable grounds to support the request- the Registrar shall then proceed to approve the request for expedited examination. Upon payment of the requisite fees, the search and examination report is then established within a month and if found to fulfil the statutory requirements for registration, the Notification of Acceptance shall be issued. Post publication and the regular Opposition period, the mark is then approved for registration. Thus, the entire registration process for a straightforward case is expected to be completed in around seven months.